Canada is about to become Nice-er: Canadian Intellectual Property Office to Accept Trademark Applications using the Nice Classification Starting this Fall

The Canadian Intellectual Property Office (CIPO) recently announced that starting Fall 2015, it will accept trademark applications with goods and services grouped and classed according to the Nice Classification. The implementation of the Nice Classification is in advance of Canada changing its trademark system as it joins the Madrid Protocol and Singapore Treaty. Future blog … Continue reading

Technology Dominates Interbrand’s Best Global Brands 2013

I recently wrote an article for the PCK Intellectual Property Reporter, an online publication of my firm Perry + Currier Inc. | Currier + Kao LLP, on the trends in Interbrand’s Best Global Brands 2013 ranking. The article can be found here.

The Canadian Trade-marks Office has made more than 300 changes to the Canadian Wares and Services Manual

The changes, effective October 17, 2012, include changes to clothing and fashion accessories, food, beauty products, automobile and bike parts, software services, financial services, entertainment and news services. To view a complete list of the addition and changes, visit the online Wares and Services manual at and search for 2012-10-17.

Canadian Trade-mark Practice Roars into a New Age: Sound Marks Now Registrable in Canada

On March 28, 2012, the Canadian Trade-marks Office (TMO) announced that it will be accepting sound mark applications effective immediately. On the same day, the TMO published the first advertisement of a Canadian sound mark application in the Canadian Trade-marks Journal at page 2 – application No. 714314 for MGM’s roaring lion sound mark, filed … Continue reading

Ontario Court of Appeal Rules that a Domain Name is Property

The Ontario Court of Appeal recently ruled that a domain name is a form of intangible property in Co. v. Lojas Renner S.A. 2011 ONCA 548. The Court of Appeal’s decision is significant for domain names registered to entities located in Ontario, and specifically for .com and other generic top-level domain names subject to … Continue reading

Think You Can Make Your Trade-mark Not Deceptively Misdescriptive By Stating the Country of Origin on the Product Packaging? Think Again…

Canada’s Federal Court of Appeal has upheld an Trade-marks Opposition Board decision stating that a trade-mark is still deceptively misdescriptive of a product’s country of origin even if the product’s packaging contains an accurate country of origin statement.

The Supreme of Canada Clarifies Criteria for Assessing Trade-mark Confusion in Masterpiece Inc. v. Alavida Lifestyles Inc.

The Supreme Court of Canada (SCC) issued its eagerly awaited decision in Masterpiece Inc. v. Alavida Lifestyles Inc., 2011 SCC 27 (“Masterpiece”) on May 26, 2011. In Masterpiece, the SCC had to determine whether the trade-mark MASTERPIECE LIVING registered by Alavida Lifestyles Inc. (“Alavida”), a business in the Ontario retirement residence industry, was confusing with … Continue reading

The Supreme Court of Canada will issue its decision this Thursday (May 26, 2011) in Masterpiece Inc. v. Alavida Lifestyles Inc.

The issues on appeal generally applicable to trade-mark confusion cases are: 1. Is there a reasonable likelihood of confusion between two trade-marks if the marks are not already in competition in the same geographic area at the material date? 2. Can the manner in which each mark is used (i.e. the “get-up”) overcome a reasonable … Continue reading

New Canadian Trade-marks Office Practice Notice Consultation Regarding Assignments and Transfers; Comments due January 20, 2011

The Canadian Intellectual Property Office (CIPO) is requesting comments, due January 20, 2011, on a proposed new Practice Notice regarding the required documentation to record assignments, ownership transfers and licenses for copyrights, industrial designs, patents and trade-marks. The proposed Practice Notices sets out two mechanisms for requesting that a copyright, industrial design, patent or trade-mark’s … Continue reading

New Canadian Trade-marks Office Practice Notices Regarding Colour Claims and Amendments Prior to Examination

The Canadian Trade-marks Office (TMO) recently issued two practice notices, effective December 22, 2010. The first practice notice concerns colour claims. The second practice notice addresses amendment to trade-mark applications request prior to examination. Colour Claims Practice Notice Trade-mark Regulations Rule 28(1) requires colour descriptions for any colour claims made in a Canadian trade-mark application. … Continue reading